Heger Products Co. v. Polk Miller Products Corporation

• Decision Date: 31 March 1931
• Docket Number: Patent Appeal No. 2655.
• Citation: 47 F.2d 966
• Parties: HEGER PRODUCTS CO. v. POLK MILLER PRODUCTS CORPORATION.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

47 F.2d 966 (1931)

HEGER PRODUCTS CO. v. POLK MILLER PRODUCTS CORPORATION.

Patent Appeal No. 2655.

Court of Customs and Patent Appeals.

March 31, 1931.

Howard L. Fischer, of St. Paul, Minn. (Thos. L. Mead, Jr., and James H. Littlehales, both of Washington, D. C., of counsel), for appellant.

Mason, Fenwick & Lawrence, of Washington, D. C. (Edward G. Fenwick, of Washington, D. C., of counsel), for appellee.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

GRAHAM, Presiding Judge.

On May 16, 1925, the appellant filed its application, serial No. 214,416, for the registration of a trade-mark to be used in connection with the sale of parrot, dog, bird, and cat medicines. The trade-mark consists of a yellow label with two annular red bands, one on the upper and one on the lower portion of the label. In its application the appellant stated "the trade mark has been continuously used and applied to said goods in applicant's business since on or about January 10th, 1921." Opposition was filed thereto by the appellee. Both parties took testimony. The Acting Examiner of Interferences sustained the opposition and refused registration, and, on appeal to the Commissioner, this decision was affirmed on August 1, 1929.

The appellee opposed the registration sought, on the ground that the same would cause confusion with the mark used by the opposer, which was the same mark as that used by the appellant, and which the opposer stated had been used by it upon animal medicines, since "long prior to the year January 10, 1921." The opposer contended that its goods were of the same descriptive properties as those of the appellant, and that to grant the application in question would cause it damage.

The Commissioner gave, as reasons for his holding, that medicines for animals are not of the same descriptive properties as foods and ingredients of foods, and that the appellant, having used the mark in question only on products consisting of aquarium cement, foods for birds, gravel and cuttle bone, and medicated seed cake, which he held to be a food, could not expand this mark to include animal medicines.

The Commissioner further found that the appellee had been using its mark, the label in question, on dog medicines since June, 1919, at which time it adopted the same as its trade-mark. He also found that this date was prior to any date of use by appellant, shown by the record, and held that the evidence of appellant as to earlier use than this was insufficient and unsatisfactory. The appellant, on August 21, 1929, filed a petition to remand to the Examiner to take further testimony on the question raised by the Commissioner in his decision, wherein he had held that the medicated seed cake made by appellant was not of the same descriptive properties as the goods manufactured by appellee. This motion was denied by the Commissioner on September 5, 1929.

In the written decision filed at that time, the Commissioner called attention to the statement of appellant, in its application for registration, that it had used this mark on its goods since on or about January 10, 1921, and held that the appellant could not be entitled to an earlier date, in the absence of correct and convincing evidence showing error in his said statement, and which clear and convincing evidence the Commissioner held did not exist. The Commissioner also held that the appellant was estopped by the acts of its officers, the Heger brothers, from claiming the right of registration by virtue of the fact that they had, in their business up until the year 1924, known of the use, by appellee, of the mark in question; had continuously bought goods from the appellee bearing such marks, and had sold the same in their place of business continuously, and sometimes representing to customers that the goods were the product of the appellant.

On September 14, 1929, the appellant filed his notice of appeal to this court in the Patent Office, setting forth nine assignments of error; thereafter, on October 1, 1929, appellant again filed in the Patent Office a motion to remand and reopen the case, alleging the discovery of claimed new and important testimony, namely, certain check stubs made in the business of Edward S. Schmid, and which, it was said, substantiated the claims of appellant to an earlier use than that set out in his application for registration. On October 9, 1929, the Commissioner denied this motion on the grounds that the case was decided on the theory that medicated seed cake for animal and bird foods were of different descriptive properties, and that the alleged newly discovered evidence would not affect that decision. He also held that the appellant was estopped by the facts appearing of record, that, therefore, the alleged new evidence would not be beneficial to him, and that notice of appeal had been filed, and "it is at least doubtful whether this Office has authority to entertain a motion to reopen after notice of appeal to the Court."

The matter now comes to this court on this record. No error is assigned by appellant upon the failure of the Commissioner to grant his motion for a remand of the cause, made October 1, 1929, as this motion was made after the notice of appeal containing the assignments of error had been filed. It is apparent that this action of the Commissioner is not now before this court for consideration. In re Schneider, 39 F.(2d) 278, 17 C. C. P. A. 952; In re Smith, 36 F.(2d) 522, 17 C. C. P. A. 752; Nolop v. Smith, 36 F.(2d) 838, 17 C. C. P. A. 768.

The question of the jurisdiction of the Patent Office to take further steps in proceedings of this nature after notice of appeal to this court has been filed is therefore not now before us, and that question is reserved for the future consideration of the court.

We shall first examine the question of estoppel raised on this record, for it is quite evident that, if the appellant, by its affirmative acts, has lulled the appellee into security, and has induced it to believe that the use of its mark was unobjected and consented to, then it would seem to follow that the appellant should be precluded from claiming the exclusive right to the use of said mark.

The evidence on behalf of the appellant shows that in 1892 one Herman H. Heger conducted a business known as H. H. Heger's Retail Store, and dealt in birds, pets, and sundries. Mr. Heger died in 1909, at which time his business was known as the Heger Bird Store. Thereafter, his sons, William F. Heger and Robert R. Heger, took charge of the business and conducted it as a copartnership, using the name of Heger Bird Food Company until about 1918 or 1919, at which time the name was changed to the Heger Products Company. Thereafter the firm was incorporated as Heger Products Corporation. During these years, and up to the time of hearing herein, these parties have conducted a retail store, where bird, fish, and animal foods and medicines are sold, in St. Paul, Minn.

The appellee is a corporation which was first known as the Polk Miller Drug Company, and is, at this time, known as the Polk Miller Products Corporation. The appellee and its predecessor has been engaged, since February 1, 1919, in the manufacture of a general line of dog medicines.

In May or June, 1919, the Polk Miller Drug Company adopted, as its trade-mark, a carton with a yellow background and with parallel red bands at the top and bottom of the carton. The evidence in the record shows, satisfactorily, that this particular kind of carton was used by the appellee and its predecessor as a trade-mark continuously since that time up to the time of hearing. There was a slight variation in the color scheme in this respect,...